Leading Hotels Trademark Dispute

PRNewswire CAPETOWN, South Africa Nov. 18 :

In 1998, the company The Leading Hotels of the World applied for
registration of the trademark THE LEADING HOTELS OF THE WORLD in respect
of hotel services in South Africa. Online Travel Group, a South Africa
based company, are opposing the South African application on the basis
that the trademark is not distinctive. The matter will be set down for
hearing within the next two months.

Online Travel Group (http://www.leadinghotels.com/), who offer online
hotel reservation services worldwide, registered the domain name
leadinghotels.com in early 1997. The website became operational that same
year.

According to Online Travel Group, since 1998, The Leading Hotels of the
World have conducted a concerted campaign to interfere with or to prevent
Online Travel Group from using the domain name leadinghotels.com.

In April 2002, in an attempt to obtain the domain name, Leading Hotels of
the World initiated proceedings through the World Intellectual Property
Organization. They lost the proceedings when the WIPO panel ruled in favor
of Online Travel Group, stating that “...the phrase `leading hotels` is
highly descriptive, is not distinctive, thus on its own would not be
capable of acting as a trademark”. Furthermore, the WIPO administrative
panel did not find that Online Travel Group were operating in bad faith,
nor did it find that the company registered the domain name to prevent The
Leading Hotels of the World from using its mark in a domain name. It was
found that use of the domain name by Online Travel Group had always been
bona fide and had always been used legitimately in connection with the
development and expansion of the company`s online hotel reservation
services.

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Earlier this year, The Leading Hotels of the World demanded that World
Choice Travel, the company through which Online Travel Group obtain their
hotel data, block all member hotels of The Leading Hotels of the World
from the data supplied to Online Travel Group, despite having no legal
right to do so and regardless of WCT`s contractual obligation to Online
Travel Group to supply this data. World Choice Travel conceded on the
basis that The Leading Hotels of the World are an important supplier of
inventory and that they did not want to damage their relationship with the
company.

The LHW has successfully registered trademarks in several countries.
However, in 2000 an application to register the trademark in New Zealand
was refused. The Examiner did not accept the applications on the ground
that the marks were not eligible under ss14 and15. Ms Sian Roberts,
Assistant Commissioner of Trade Marks held that the words THE LEADING
HOTELS OF THE WORLD were so likely to be used for general description that
even if extensive evidence of use were supplied, it would be difficult to
justify granting a monopoly in the mark. Both South Africa and New Zealand
fall under British Commonwealth Law.
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